Trials@uspto.gov Paper 22
`571-272-7822 Date: June 30, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`
`____________
`
`Cases IPR2016-00084 and IPR2016-01059
`Patent 5,665,772
`____________
`
`
`Before LORA M. GREEN, CHRISTOPHER L. CRUMBLEY, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Counsel for Petitioner, Par Pharmaceutical, Inc., and Patent Owner,
`Novartis AG, contacted the Board to advise us that, as instructed in our
`
`
`571-272-7822 Date: June 30, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`
`____________
`
`Cases IPR2016-00084 and IPR2016-01059
`Patent 5,665,772
`____________
`
`
`Before LORA M. GREEN, CHRISTOPHER L. CRUMBLEY, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Counsel for Petitioner, Par Pharmaceutical, Inc., and Patent Owner,
`Novartis AG, contacted the Board to advise us that, as instructed in our
`
`
`
`IPR2016-00084 and IPR2016-01059
`Patent 5,665,772
`
`Order of June 2, 2016 (Paper 131), the parties had met and conferred
`regarding various scheduling issues in these related inter partes review
`proceedings. Despite their efforts, however, the parties had been unable to
`reach agreement on a schedule acceptable to both parties. The panel
`convened a call on June 17, 2016, attended by Judges Green, Crumbley, and
`Pollock, as well as counsel for Par and Novartis. Counsel for Breckenridge
`Pharmaceutical, Inc. (the Petitioner in IPR2016-01023 and IPR2016-01103)
`and Roxane Laboratories, Inc. (the Petitioner in IPR2016-01102) also
`attended the call, as both parties have filed Motions seeking joinder of their
`respective proceedings with IPR2016-00084.
`A court reporter was present on the call, and Par has filed a copy of
`the transcript with the Board. Ex. 1032, “Tr.” The details of the parties’
`positions are reflected in the transcript and need not be repeated in full detail
`herein.
`As was discussed during the call, Par agreed to extend Due Date 1 in
`IPR2016-00084 at Novartis’ request, both to accommodate the trial schedule
`in the copending District Court action and to permit the Board to rule on the
`joinder motions in the related cases before Novartis files its Patent Owner
`Response. The parties agreed to re-set Due Date 1 to September 16, 2016,
`subject to the Board’s final approval of the schedules of the related cases.
`Tr. 11–12.
`The parties were unable, however, to reach agreement on significantly
`shortening the deadline for Novartis’ preliminary response in IPR2016-
`
`
`1 For brevity, citations herein are to the record in IPR2016-00084. Similar
`papers may be found in the record of IPR2016-01059.
`2
`
`
`
`
`
`IPR2016-00084 and IPR2016-01059
`Patent 5,665,772
`
`01059, currently set for August 15, 2016. Par requested that the preliminary
`response date for its case, as well as those for the Breckenridge and Roxanne
`cases, be set to July 1, 2016, though counsel later suggested that July 29,
`2016 would be acceptable. Tr. 11. Novartis proposed August 12, 2016, for
`all four cases. Tr. 16. While Par did not express strong disagreement with
`Novartis’ date, counsel did note that it risked delaying the Board’s final
`written decision in IPR2016-00084. Tr. 23.
`Upon review of the current schedules of the five related cases and the
`parties’ proposed modifications, and taking into account our mandate to
`provide a just, speedy, and inexpensive resolution of these proceedings, we
`will re-set the due date for Novartis’ preliminary responses to July 29, 2016.
`Delaying the preliminary responses further would make synchronizing the
`schedules of any joined proceedings, without significantly delaying the final
`written decision in IPR2016-00084, difficult. Furthermore, the subject
`matter of the later cases substantially overlaps with—and, in many respects,
`is identical to—that of the instituted IPR2016-00084 case, which should
`speed the preparation of Novartis’ preliminary responses.2
`
`The remaining schedule modifications proposed by the parties are
`contingent on a number of factors, including which (if any) of the later-filed
`proceedings are instituted and joined, and the date on which institution takes
`
`
`2 We note that Novartis has expressed interest in filing testimonial evidence
`with its preliminary responses, an option that was not available under the
`version of our Rules in effect when the IPR2016-00084 preliminary
`response was due. We do not expect that shortening the response period by
`two weeks will significantly hinder Novartis’ ability to present testimonial
`evidence, given the overlapping subject matter of the cases.
`3
`
`
`
`
`
`IPR2016-00084 and IPR2016-01059
`Patent 5,665,772
`
`place. The Board will take these proposals under advisement, and may
`further modify the schedules of these proceedings at a later date.
`
`In light of the foregoing, it is
`ORDERED that the Scheduling Order in IPR2016-00084 (Paper 9) is
`hereby modified as follows:
`DUE DATE 1 ............................................... September 16, 2016
`DUE DATE 2 .................................................. December 5, 2016
`DUE DATE 3 ........................................................................ N/A
`and
`FURTHER ORDERED that in IPR2016-01059, Novartis shall file its
`preliminary response, if any, on or before July 29, 2016.
`
`
`
`4
`
`
`
`
`
`IPR2016-00084 and IPR2016-01059
`Patent 5,665,772
`
`FOR PETITIONER:
`
`Daniel Brown
`Robert Steinberg
`Jonathan Strang
`LATHAM & WATKINS LLP
`daniel.brown@lw.com
`Bob.Steinberg@lw.com
`jonathan.strang@lw.com
`
`
`FOR PATENT OWNER:
`
`Nicholas N. Kallas
`Raymond Mandra
`FITZPATRICK, CELLA, HARPER & SCINTO
`nkallas@fchs.com
`rmandra@fchs.com
`
`
`5
`
`
`
`
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